USPTO Patents Application 10087290

' Q ^X^r * fN1TED ^ ^ TES P ATENT AND Tradem krk Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 14S0

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/087,290

02/28/2002

Paul Morton

13346US01

3107

23446 7590 03/01/2005

MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661

EXAMINER

STORM, DONALD L

ART UNIT

PAPER NUMBER

2654

DATE MAILED: 03/01/2005

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

10/087,290

Applicant(s)

MORTON ETAL.

Examiner

Donald L Storm

Art Unit

2654

~ The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE _3_ MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1)^ Responsive to communication(s) filed on February 28. 2002 through February 12, 2004 .
2a)D This action is FINAL. 2b)S This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quay/e, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) E3 Claim(s) 1-32 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) E3 Claim(s) 1-32 is/are rejected.

7) D Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10) 13 The drawing(s) filed on 28 February 2002 is/are: a)M accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52.

Priority under 35 U.S.C. § 119

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)Q All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received. '

2. D Certified copies of the priority documents have been received in Application No. .

3. D Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) ^ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) M Information Disclosure Statement(s) (PTO-1 449 or PTO/SB/08) 5 ) D Notice of Informal Patent Application (PTO-1 52)

Paper No(s)/Mail Date 2/12/04. 6) □ Other .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date

Application/Control Number: 10/087,290
Art Unit: 2654

Page 2

DETAILED ACTION
Information Disclosure Statement

1 . A copy of the search report for application EP 03004539.7-1246- of the European Patent
Office (submitted February 12, 2004) and copies of the documents are present, and they have been
considered by the Examiner.

Specification

2. The Examiner notes, without objection, the possibility of informalities in the abstract. It is
in the best interests of the patent community that the Applicant be aware of these editorial
situations and consider changes during normal review and revision of the abstract.

Numbers in the abstract referring to elements in the drawings lengthen the abstract and the
reference is unclear when not accompanied by the appropriate figure. They may interfere with its
purpose, which is to determine quickly from a cursory inspection the nature and gist of the
technical disclosure. The language should be clear and concise. See 37 CFR § 1 .72 and MPEP
§ 608.01(b). The form used in the patent disclosure, such as "decoder (10)", "memory (44)", and
processor (42)" may not be appropriate in the abstract.

Claim Rejections - 35 USC §102

3. The following is a quotation of the appropriate paragraphs of 35 U.S. C. 102 that form the
basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless -

(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in
the United States before the invention by the applicant for patent or (2) a patent granted on an application for
patent by another filed in the United States before the invention by the applicant for patent, except that an
international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this

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subsection of an application filed in the United States only if the international application designated the United
States and was published under Article 2 1(2) of such treaty in the English language.

Miitler

4. Claims 1, 2, 6, 8-10, 14, 16-18, 22, 24-26, 30, and 32 are rejected under 35 U.S.C. 102(e)
as being anticipated by Miiller [US Patent 6,633,608] (spelling corrected).

Regarding claim 1, Miiller [at column 2, lines 16-21] describes a decoder to decoding
compressed data by describing the content and functionality of the recited limitations recognizable
as a whole to one versed in the art as the following terminology:

a memory [see Fig. 1, items 100, 117, 305, and their descriptions, especially at column 8,
lines 47-50, of the single memory module supplying the anchor frame memory module and the
decompression module memory];

the memory arranged to store the compressed data [see Fig. 1, items 100, 1 17, 305 and
their descriptions, especially at column 4, lines 64-65, of the anchor frame memory storing the
compressed stream];

the memory arranged to store operating code (or operating data, or both) [see Fig. 1, items
100, 117, 300, 305, and their descriptions, especially at column 15, lines 4-6, of a microprocessor
configured by code segments to create specific logic circuits];

a processor [see Fig. 1, items 100, 150, 300, 400, ROUTINE(s) and their descriptions,
especially at column 15, lines 4-6, of a microprocessor configured by code segments to create
specific logic circuits];

the processor arranged to allocate an amount of the memory for storing compressed data
and for storing operating data, operating code, or both [see Fig. 1, items 100, 117, 150, 300, 305,
and their descriptions, especially at column 5, lines 64-67, of the controller operating to adapt a

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memory resources allocation between the anchor frame memory and decompression module
memory];

the processor arranged to decode the compressed data stored in the allocated amount of
memory [see Fig. 1, items 100, 200, 1 17, 300, and their descriptions, especially at column 5,
lines 1-1 1, of the decompression module mirroring operation of the compression module on
compressed block data retrieved from anchor frame memory module];

the compressed data corresponds to a predetermined duration of uncompressed data [at
column 4, lines 1 1-22, as each reconstructed pixel block within an anchor frame of a stream is
compressed];

the operating data or code is for a plurality of decompression algorithms, the different
algorithms require different amounts of memory to store compress data, and the allocating
depends on the decompression algorithm [at column 6, lines 8-26, as the allocation decision is
made according to a defined scaling factor to compress and decompress within the context of
compression/decompression used and alternatively PEP navigation window being displayed over
video information];

the different algorithms require different amounts of memory for the operating data and
code [at column 6, lines 1 1-24 and column 8, lines 14-15, as in the case of no compression
decompression, the decompression module memory will receive little or no allocation and
alternatively in the case of PIP navigation window being displayed of video information, the
decompression module will operate to decompress the information retrieved by receiving an
allocation of memory resources sufficient to enable the decompression module to function];

the decompression algorithm is selected [at column 7, line 61 -column 8, line 3, as the
selection of DCT mode of non-DCT mode may be made];

Application/Control Number: 10/087,290
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Pages

the processor arranged to select one of the decompression algorithms [at column 10,
lines 15-18, as is enabling the decompression module allows for continuation of the decode
function while enabling the PIP function].

5. Regarding claim 2, Miiller also describes:

a first portion to store operating data, operating code, or both [see Fig. 1, items 100, 117,
300, 305, and their descriptions, especially at column 15, lines 4-6, of a microprocessor configured
by code segments to create specific logic circuits];

the stored operating data or code is for a decompression algorithm [at column 8, lines 14-
15, as the decompression module will operate to decompress the information retrieved by
receiving an allocation of memory resources sufficient to enable the decompression module to
function];

a second portion to store an amount of compressed data suitable for the algorithm [at
column 6, lines 8-26, as the allocation decision is made according to a defined scaling factor to
compress and decompress within the context of compression/decompression used];

the algorithm is selected [at column 7, line 61 -column 8, line 3, as the selection of DCT
mode of non-DCT mode may be made].

6. Regarding claim 6, Miiller also describes

compressed data comprising identification data [at column 7, lines 40-43, as the
compressed stream is packed with scaling factors];

the compressed, identification data identifies the compression algorithm and the selection
is in response to the identification data [at column 6, lines 8-26, as the allocation decision is made

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according to a defined scaling factor to compress and decompress within the context of
compression/decompression used and alternatively PIP navigation window being displayed over
video information].

7. Regarding claim 8, Miiller also describes:

the memory arranged to store [see Fig. 1, items 100, 117, 305, and their descriptions,
especially at column 8, lines 47-50, of the single memory module supplying the decompression
module memory];

the memory is arranged to store operating data [see Fig. 1, items 100, 117, 300, 305, 310-
340 and their descriptions, especially at column 8, lines 4-19, of the memory allocation of
unpacking module, Q-l module, HAAR-1 module, and IDCT module];

the memory is arranged to store operating code [see Fig. 1, items 100, 117, 300, 305, and
their descriptions, especially at column 15, lines 1-6, of a microprocessor configured by code
segments to create specific logic circuits when loaded into the computer].

8. Claims 9, 10, 14, and 16 set forth a method with limitations comprising the functionality
associated with using the system recited in claims 1, 2, 6, and 8, respectively. Because Miiller
describes the similar limitations as indicated there, these claims thus are anticipated accordingly.

9. Claim 17 sets forth limitations similar to the store, select, and allocate limitations set forth
in claim 1. Miiller describes the limitations as indicated there. In addition, the memory and
processor set forth in claim 1 describe means for providing the functionality for storing, selecting,
and allocating.

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10. Claim 18 sets forth additional limitations similar to limitations set forth in claim 2. Miiller
describes the additional limitations as indicated there. In addition, the memory and processor set
forth in claim 1 describe means for selecting and allocating to provide means for allocating first
and second amounts of memory.

1 1 . Claim 22 and 24 set forth additional limitations similar to limitations set forth in claim 6
and claim 8, respectively. Miiller describes the additional limitations as indicated there. In
addition, the memory and processor set forth in claim 1 describe means for providing the claimed
functionality.

12. Claims 25, 26, 30, and 32 set forth the tasks having limitations comprising the
functionality to achieve use of the system recited in claims 1, 2, 6, and 8, respectively. Miiller
describes those limitations as indicated there, and Miiller also describes:

a computer readable medium with executable instructions representing a computer
program that can cause a computer to perform the tasks [at column 14, lines 54-62, as computer
readable storage media embodying computer program code wherein a computer loading and
executing the code becomes an apparatus for practicing the processes].

Claim Rejections - 35 USC §103

13. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are

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such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

This application currently names joint inventors. In considering patentability of the claims
under 35 U.S. C. 103(a), the examiner presumes that the subject matter of the various claims was
commonly owned at the time any inventions covered therein were made absent any evidence to
the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor
and invention dates of each claim that was not commonly owned at the time a later invention was
made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35
U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).

Mutter and Nichols

14. Claims 3-5, 11-13, 19-21, and 27-29 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Miiller [US Patent 6,633,608] (spelling corrected) in view of Nichols et al. [US
Patent 6,343,263],

15. Regarding claim 3, Miiller describes the included claim elements as indicated elsewhere in
this Office action. Miiller [at column 12, lines 20-30] also describes the compressed data
comprises audio data.

However, Miiller does not explicitly describe that the compressed data is voice data.

Like Miiller . Nichols [at column 3, lines 38-45] system can employ multimedia devices,
including audio. Miiller chooses video processing as a specific example, but Nichols chooses fax
and audio as a specific example. Among the processing that Nichols explicitly describes is:

voice data [at column 2, lines 66-67, as data such as voice].

As indicated, Nichols shows that processing voice data as a type of audio data was known
to artisans at the time of invention. To the extent that Miiller ' s [at column 12, lines 20-3 1]
MPEG-2 audio processing does not necessarily include processing voice data, it would have been
obvious to one of ordinary skill in the art of handling streams of data at the time of invention to

Application/Control Number: 10/087,290 Page9
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include the concepts described by Nichols at least processing voice data as Miiller ' s compressed
audio data because Nichols [at column 2, lines 34-67] also points out that it is desirable to provide
for handling streams of speech data transmitted at the same time as video data to enable a variety
of applications, including speech compression.

16. Regarding claim 4, Miiller also describes:

data decompression algorithms [at column 5, lines 1-1 1, of the decompression module
mirroring operation of the compression module].

Nichols also describes:

voice data algorithms [at column 2, lines 60-67, as commands to the processing engine to
enable use with voice].

Although neither Miiller nor Nichols explicitly describes voice decompression algorithms,
Nichols [at abstract] describes a flexibility for a variety of applications to process any type of data
that is transmitted over a communication network by abstracting the functions of each element of
the processing system from each other. To the extent that Miiller 's [at column 12, lines 20-31]
MPEG-2 audio processing does not necessarily include processing voice data, it would have been
obvious to one of ordinary skill in the art of handling streams of data at the time of invention to
include the concepts described by Nichols at least processing voice data as Miiller ' s compressed
audio data because Nichols [at column 2, lines 34-67] also points out that it is desirable to provide
for handling streams of speech data transmitted at the same time as video data to enable a variety
of applications, including speech compression.

Application/Control Number:
Art Unit: 2654

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1 7. Regarding claim 5, Nichols also describes:

the data results from a phone call [at column 4, lines 6-54, as providing a stream of data
from answering a received call on a traditional POTS communications network];

processing occurring during the phone call [at column 5, lines 35-37, as real-time functions
and operation of the real-time engine].

Although neither Miiller nor Nichols explicitly describes compressed data resulting from a

0

phone call and selection and allocation occur during the phone call, Nichols [at abstract] describes
a flexibility for a variety of applications to process any type of data that is transmitted over a
communication network by abstracting the functions of each element of the processing system
from each other. As indicated, Nichols shows that processing data resulting from a phone call
during the phone call was known to artisans at the time of invention. The many teachings
throughout Nichols of the flexibility to implement varieties of real-time processing would have
made it obvious to one of ordinary skill in the art of voice data processing at the time of invention
to include the concepts described by Nichols to receive Miiller 5 s compressed data from a phone
call and selecting the algorithms and allocating memory during the phone call because Nichols [at
column 2, lines 34-67] also points out that it is desirable to provide for handling streams of speech
data transmitted at the same time as video data to enable a variety of applications in real time,
including speech compression.

18: Claims 1 1-13 set forth a method with limitations comprising the functionality associated
with using the system recited in claims 3-5. Because Miiller and Nichols describe and make
obvious the similar limitations as indicated there, these claims thus are unpatentable accordingly.
Because Nichols 's processing is real-time, decoding occurs during the phone call.

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Page II

19. Claims 19 and 20 set forth additional limitations similar to limitations set forth in claims 3
and 4, respectively. Miiller and Nichols describe the additional limitations as indicated there.

20. Regarding claim 21, Miiller describes the included claim elements as indicated elsewhere
in this Office action. Miiller also describes:

decoding (the compressed data) [see Fig. 1, items 100, 200, 117, 300, and their
descriptions, especially at column 5, lines 1-11, of the decompression module mirroring operation
of the compression module on compressed block data retrieved from anchor frame memory
module].

Miiller [at column 12, lines 20-30] also describes the compressed data comprises audio
data. However, Miiller does not explicitly describe that the decoding, selecting, and allocating
operate during a phone call.

Like Miiller Nichols [at column 3, lines 38-45] system can employ multimedia devices,
including audio. Miiller chooses video processing as a specific example, but Nichols chooses fax
and audio received over a telephone network as a specific example. Among the processing that
Nichols explicitly describes is:

processing occurring during a phone call [at column 5, lines 35-37, as real-time functions
and operation of the real-time engine].

As indicated, Nichols shows that processing voice data during a phone call as a type of
audio data was known to artisans at the time of invention. Since Nichols [at column 2, lines
34-67] also points out that it is desirable to provide for handling streams of speech data
transmitted at the same time as video data to enable a variety of applications, including speech

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Art Unit: 2654

compression, it would have been obvious to one of ordinary skill in the art of processing data
received during a phone call at the time of invention to include the concepts described by Nichols
at least processing during the phone call to allow Miiller 3 s audio and video data to be received
over a telephone network to decode it and store it in memory that was allocated during the phone
call because that would enable a variety of real time telephone applications.

21 . Claims 27-29 set forth additional limitations similar to limitations set forth in claims 3-5,
respectively. Miiller and Nichols describe and make obvious the additional limitations as
indicated there. Because Nichols 's processing is real-time, decoding occurs during the phone call.

Miiller and Shaffer

22. Claims 7, 15, 23, and 31 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Miiller [US Patent 6,633,608] (spelling corrected) in view of Shaffer [US Patent 6,683,889].

23. Regarding claim 7, Miiller describes the included claim elements as indicated elsewhere in
this Office action, including the stored, compressed data in the allocated memory as indicated in
the rejection of parent claim 1.

Miiller extensively discusses memory allocation related to the storage requirements of the
compression/decompression modes, but does not discuss the modes' processing times,
packetization and packet transfer times, and the time delay that they cause between reception of
the data and display of the data to the user.

In particular, Miiller does not explicitly describe removing jitter from the compressed data
stored in the allocated memory.

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Page IS

Shaffer describes that removing jitter from the compressed data stored in the allocated
memory was known to artisans at the time of invention, as follows:

remove jitter from compressed data stored in allocated memory [at column 1, lines 18-51,
as even out "jitter" of packets of compressed data for the payload of a FIFO jitter buffer of
predetermined depth].

Since Shaffer [at column 1, lines 26-28] also points out that jitter can cause poor overall
reproduction quality of multimedia data, it would have been obvious to one of ordinary skill in the
art of data compression, packetization, transfer, decompression, and reproduction of data at the
time of invention to include the concepts described by Shaffer at least removing jitter from the
compressed data stored in the allocated memory with Mailer's processing and reproduction of
packetized data because jitter removal has the advantage of removing clicks, delays, other
annoyances that create overall poor reduction quality.

24. Claim 15 sets forth a method with limitations comprising the functionality associated with
using the system recited in claim 7. Because Miiller and Shaffer describe and make obvious the
similar limitations as indicated there, these claims thus are unpatentable accordingly.

25. Claim 23 sets forth additional limitations similar to limitations set forth in claim 7. Miiller
and Shaffer describe the additional limitations as indicated there. In addition, the memory and
processor set forth in claim 1 describe means for provide the claimed functionality.

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26. Claim 3 1 sets forth the additional task having limitations comprising the functionality to
achieve use of the system recited in claim 7. Miiller and Shaffer describe and make obvious those
additional limitations as indicated there, and Miiller also describes:

instructions that can cause a computer to perform the task [at column 14, lines 54-62, as
computer program code embodied on computer readable storage media wherein a computer
loading and executing the code becomes an apparatus for practicing the processes].

Conclusion

27. The following references here made of record are considered pertinent to applicants
disclosure:

Chu [US Patent 5,374,916] describes memory allocation to compress data and store a history of

operation of the compression.
Clark [US Patent 5,627,533] describes altering the size of memory allocated to storing a table used

for encoding and decoding speech data.
Troeller et al. [US Patent 5,768,445] describes allocating memory, storing uncompressed data, and

storing compressed data during encoding of an uncompressed information stream.
Makiyama et al. [US Patent 6,310,981] describes transmitting and receiving a variety executable

functions for decoding, wherein the received functions are selectable according to the

resources that they require.

28. Any response to this action should be mailed to:

Mail Stop Amendment

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 223 13-1450

or faxed to:

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Page 15

(703) 872-9306, (for formal communications intended for entry)

Or:

(703) 872-9306, (for informal or draft communications, and please label
"PROPOSED" or "DRAFT")

Patent Correspondence delivered by hand or delivery services, other than the USPS, should
be addressed as follows and brought to U.S. Patent and Trademark Office, Customer
Service Window, Mail Stop Amendment, Randolph Building, 401 Dulany Street,
Alexandria, VA 223 14

29. Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Donald L. Storm, of Art Unit 2654, whose telephone number is
(703) 305-3941. The examiner can normally be reached on weekdays between 8:00 AM and 4:30
PM Eastern Time. If attempts to reach the examiner by telephone are unsuccessful, the
examiner's supervisor, Richemond Dorvil can be reached on (703) 305-9645.

Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Inquiries regarding the status of submissions
relating to an application or questions on the Private PAIR system should be directed to the
Electronic Business Center (EBC) at 866-217-9197 (toll-free) or 703-305-3028 between the hours
of 6 a.m. and midnight Monday through Friday EST, or by e-mail at: ebc@uspto.gov. For general
information about the PAIR system, see http://pair-direct.uspto.gov.

Donald L. Storm
Patent Examiner

February 22, 2005 Art Unit 2654